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Inventor Assistance Program (IAP): Pro Bono assistance for under-resourced inventors

by Michael Newton (Kilburn & Strode LLP, London, UK – per AIPPI PCT Committee)

Introduction

The patent system is a powerful tool for those seeking protection for their inventions. But the system is complex, and a professional representative is needed for best results. Legal advice does not come cheaply and there are official fees to pay. This situation presents a challenge for would-be applicants from less developed countries, where the conservation of resources is a high priority.

According to a WIPO report (PCT/WG/12/4[1]), the costs of professional representation can often lead to self-representation by applicants in developing countries. Self-represented applicants may be more likely to fail due to the complexity of the patent system, rather than a lack of merit to their invention. As stated in paragraph 6 of the WIPO report, lone inventors may struggle with basic formalities:

“… in Colombia, between 2003 and 2013, more than half of local inventors who applied for a patent had their applications rejected based purely on formalities.[2]  Similarly, in the Philippines, between 2003 and 2016, over 60 per cent of local inventors failed at the same stage.[3]

How should access to the patent system be improved for inventors from less developed countries?

This is the question addressed by the Inventor Assistance Program (IAP). The IAP was created in 2016 by WIPO in collaboration with the World Economic Forum. It now operates in five countries:

  • Colombia,
  • Ecuador,
  • Morocco,
  • Philippines and
  • South Africa.

The IAP matches under-resourced inventors in these countries with patent attorneys who provide pro bono legal assistance. Volunteer attorneys have together provided assistance for at least 50 inventions. The story of the 50th invention, “Waste Buddies”, which aims to help waste pickers recycle more efficiently, can be read here: https://www.wipo.int/iap/en/news/2020/news_0001.html

 

The process

The IAP aims to ensure each inventor entering the program has a basic level of IP knowledge. To join the program, inventors need to have either:

  1. Already filed a patent application, or
  2. Completed an online course[4].

A national screening board in each country decides on which applications to support under the IAP. The national screening board will include representatives of the national patent office and may also include representatives from other parts of government. Selected applications are passed to the WIPO Secretariat.

The WIPO Secretariat matchmakes between inventors and local attorneys in their country. The local attorney will advise the inventor on a pro bono basis, working to draft and file a national patent application. Subsequently, the local attorney may file an international (PCT) application.

Further volunteer attorneys are available to assist with national/regional phase entry in US and Europe. The connection is again made by the WIPO Secretariat on request from the local attorney.

 

How can I help?

AIPPI members may be interested to assist by offering their services on a pro bono basis. WIPO is building rosters of volunteer attorneys in the countries where the IAP is active, as well as in Europe, Japan and the US. The online application form is here: https://www3.wipo.int/opinio/s?s=603

Membership of the IAP is available to any attorney or agent admitted to practice before the patent office of the country in which they volunteer. Important conditions are set out in paragraph 35 of WIPO report PCT/WG/12/4:

“Volunteers must be willing to provide their services to under-resourced inventors at no cost. It is the responsibility of the patent attorney or agent to provide high quality legal services throughout the IAP representation, no different from that provided to paying clients. The professional-client relationship in the IAP cases shall be governed by the same laws, rules and ethical standards that apply to paying clients in the jurisdiction where the representation occurs.”

The Guiding Principles[5] of the IAP must also be read and accepted.

The online application form is not limited to the above listed countries. And WIPO states the program “plans to expand to additional key jurisdictions”. Attorneys from other counties may also be able to assist accordingly.

 

Acknowledgements

The author thanks the following individuals for helpful discussions concerning their experience with the IAP:

Dr. Byron Robayo – Paz Horowitz (Equador)

Carlos R. Olarte – OlarteMoure (Colombia)

Elisabetta Papa – SIB (Italy)

 

References:

[1] PDF available at: https://www.wipo.int/edocs/mdocs/pct/en/pct_wg_12/pct_wg_12_4.pdf

[2]  Application to the Inventor Assistance Program by Colombia.  Superintendencia de Industria y Comercio (SIC).

[3]  Application to the Inventor Assistance Program by the Philippines.  Intellectual Property Office of the Philippines (IPOPHL).

[4] Online course in English available at: https://welc.wipo.int/authpage/signin.xhtml?goto=https%3A%2F%2Fwelc.wipo.int%3A443%2Facrp%2Fprogram%2F

[5] Available here: https://www.wipo.int/export/sites/www/iap/en/docs/iap_guiding_principles.pdf